Ex Parte Vick et al

Board of Patent Appeals and Interferences

Aug 28, 2012

11409518 (B.P.A.I. Aug. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES D. VICK JR., JIMMIE R. WILLIAMSON JR.,
LEO G. COLLINS, and GLENN R. DAVIS
____________________

Appeal 2010-007855
Application 11/409,518
Technology Center 3600
____________________

Before JOHN C. KERINS, STEVEN D. A. McCARTHY, and
PATRICK R. SCANLON, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007855
Application 11/409,518

2
STATEMENT OF THE CASE
James D. Vick, Jr. et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-23. A previously maintained
rejection of claims 15-22 under 35 U.S.C. § 112, first paragraph, has been
withdrawn by the Examiner. Ans. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to a safety valve used in
subterranean wells and having a mono spring closure mechanism. Spec. p.
1, ll. 16-20. Claims 1, 9, and 15, reproduced below, are illustrative of the
subject matter on appeal.
1. A safety valve for use in a subterranean
well, the safety valve comprising:
a closure mechanism including a spring, the
spring including at least one leg which has a
progressively reduced cross-sectional area along a
majority of its length.
9. A safety valve for use in a subterranean
well, the safety valve comprising:
a closure mechanism including a spring
having a leg which bends along its length to bias a
closure member toward a fully closed position in
which flow through a passage of the safety valve is
prevented, the leg applying a biasing force to the
closure member at the fully closed position and at
a fully open position of the closure member in
which maximum flow through the passage is
permitted, and wherein the entire spring rotates as
the closure member rotates.
Appeal 2010-007855
Application 11/409,518

3
15. A safety valve for use in a subterranean
well, the safety valve comprising:
a closure mechanism including a closure
member, and a spring with at least one leg which
applies a biasing force to the closure member, the
leg comprising multiple overlapping beams.
THE REJECTIONS
Appellants seek review of the following rejections:
Claims 9, 11-15, and 17-23 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Deaton (US 2003/0178199 A1, pub. Sep. 25, 2003).
Claims 15, 17, and 19-22 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Vick (US 2005/0039922 A1, pub. Feb. 24, 2005).
Claims 1-8, 10, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Deaton and Turkish (US 3,602,205, iss. Aug. 31,
1971).
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vick and Turkish.
ISSUES
Does the entire spring 60 of Deaton rotate with the closure member or
flapper 38?
Does Deaton disclose a spring having at least one leg comprising
multiple overlapping beams?
Does Vick disclose a spring having at least one leg comprising
multiple overlapping beams?
Does Vick disclose a spring that is formed from multiple pieces of
material joined to each other?
Appeal 2010-007855
Application 11/409,518

4
Did the Examiner articulate adequate reasoning based on rational
underpinnings to explain why one of ordinary skill would have been led to
combine the Deaton and Turkish references?
Did the Examiner articulate adequate reasoning based on rational
underpinnings to explain why one of ordinary skill would have been led to
combine the Vick and Turkish references?
ANALYSIS
Rejection of claims 9, 11-15, and 17-23 based on Deaton
Appellants argue claims 9, 11-14, and 23 as a group. App. Br. 13.
We select independent claim 9 as the representative claim in accordance
with 37 C.F.R. § 41.37 (c)(1)(vii) (2011). Claims 11-14 and 23 stand or fall
with claim 9.
The Examiner finds that Deaton discloses a safety valve including a
spring 60 having a leg 64 that bends along its length to bias a closure
member 38 toward a fully closed position. Ans. 3. Appellants argue that
Deaton fails to disclose that the entire spring 60 rotates as the closure
member 38 rotates, as required by claim 9. App. Br. 13. More particularly,
Appellants assert that Deaton’s elastically deformable members 64 cannot
rotate with the closure member because their ends 68, 70 are secured to the
housing 36. Id. The Examiner points to the last sentence in Paragraph
[0048] of Deaton (which states “the members 64 need not be rigidly
connected to the housing 36 or other structure, if it is desired to allow some
movement of the member(s) 64”) as evidence that the members 64 rotate.
Ans. 8.
Appeal 2010-007855
Application 11/409,518

5
We disagree that the members 64, and thus the entire spring 60 of
Deaton, rotate with the closure member 38. The members 64 are anchored
at or near their respective ends 68, 70 to the valve housing 36. Deaton, p. 4,
para. [0043]. The ends 68, 70 are sufficiently connected to the valve
housing 36 “to cause the members 64 to twist when the flapper member 38 is
rotated out of a closed position.” Deaton, p. 5, para. [0048] (emphasis
added). The members 64 thus twist and do not rotate with the flapper or
closure member. Regarding the statement in Paragraph [0048] that “some
movement” of the members 64 may be allowed, there is no indication of
what the nature of this movement would be or how it would result in the
members 64 rotating with the closure member 38. As noted by Appellants,
Paragraph [0049] of Deaton states that when the flapper member 38 is
rotated out of the closed position, the members 64 will attempt to rotate
therewith but will resist rotation because of the ends being connected to a
stationary component. See App. Br. 14. The prevention of rotation is
necessary to cause the members 64 to elastically deform or twist so as to
generate the desired torque or spring action. Accordingly, we conclude that
the reference in Paragraph [0048] to “some movement” does not support the
notion that the members 64 rotate with the closure member 38.
The Examiner further contends that a comparison of Deaton’s Figures
6A and 6B shows that the members 64 must rotate to some degree as the
closure member 38 rotates. Ans. 8. Specifically, the Examiner notes that
Figure 6A shows the member 64 pointing upward when the arm 54 of spring
60 is nearly vertical with respect to the housing 36 and Figure 6B shows the
member 64 pointing downward when the arm 54 of spring 60 is horizontal
Appeal 2010-007855
Application 11/409,518

6
with respect to the housing 36.1 Id. We disagree that Figures 6A and 6B
suggest the entire member 64 must rotate with the closure member 38.
Figures 6A and 6B depict only a small portion of the front end of the
member 64. As noted supra, the back end of the member 64 is anchored to
resist rotation, meaning the entire member 64 does not rotate. The change in
orientation of the front end of member 64 depicted in Figures 6A and 6B is
likely flexure that occurs as the member twists and elastically deforms.
For the above reasons, we cannot sustain the rejection of claim 9—
and of claims 11-14 and 23 depending therefrom—under 35 U.S.C. § 102(b)
as being anticipated by Deaton.
Appellants argue claims 15, 17 and 19-21 as a group. App. Br. 15.
We select claim 15 as the representative claim in accordance with 37 C.F.R.
§ 41.37 (c)(1)(vii) (2011). Claims 17 and 19-21 stand or fall with claim 15.
Independent claim 15 recites a safety valve comprising a spring that
applies a biasing force to a closure member, wherein the spring has at least
one leg comprising multiple overlapping beams. The Examiner finds that
the spring 60 of Deaton includes a leg having multiple overlapping beams in
the form of the arm 54 and the elastically deformable member 64. Ans. 3-4.
Referring to Figures 5 and 6B of Deaton, the Examiner contends that the
elements 54 and 64 “appear to overlap where they converge.” Ans. 4. The
Examiner also states Figure 6A shows that “the members 54 and 65 [sic] do

1 We note that Figure 6A appears to show the member 64 pointed downward
while Figure 6B appears to show the member 64 pointed upward, which is
the opposite of what the Examiner states. Nevertheless, the Examiner’s
point that Figures 6A and 6B show the orientation of a portion of the
member 64 changing as the closure member rotates between its open and
closed positions is accurate.
Appeal 2010-007855
Application 11/409,518

7
overlap at pin 50.” Ans. 10. We find the drawings of Deaton to be
inconclusive on this point. While Figures 6A and 6B do appear to depict the
member 64 crossing over the arm 542, Figure 5 does not appear to show any
overlap.
Furthermore, the written description of Deaton describes the members
64 as “extending generally laterally” from the side of the arm 54 (see
Deaton, p. 4, para. [0043]), which would seem to suggest that the elements
do not overlap. However, regardless of whether they overlap, we determine
that the elements 54, 64 are not part of the same leg of the spring 60, as
required by claim 15. The member 64 is joined at its front end to the arm
54, but the arm 54 and member 64 extend from this junction in diverging
directions and thus do not give the appearance as being part of a common
leg. Furthermore, the member 64 and the arm 54 do not operate together to
bias the closure member 38 toward its closed position. Instead, the torque in
the member 64 acts on the arm 54 (as a supplement to the spring force of the
spring assembly 52), and the arm 54 in turn acts on the closure member 38.
Deaton, p. 5, para. [0050]. Indeed, the member 64 does not even need to act
on the arm 54 as it alternatively can be connected directly to the closure
member 38. Deaton, p. 4, para. [0046]. Accordingly, the elements 54, 64
cannot be considered as part of the same leg.

2 As this issue is resolved on another basis, we decline to address whether
the small amount of overlap apparently depicted in Figures 6A and 6B
would make the elements 54, 64 “overlapping” beams in the same sense the
term is used in claim 15.
Appeal 2010-007855
Application 11/409,518

8
We therefore do not sustain the rejection of claim 15—and of claims
17-22 depending therefrom—under 35 U.S.C. § 102(b) as being anticipated
by Deaton.
Rejection of claims 15, 17, and 19-22 based on Vick
Appellants argue claims 15, 17, 19, 21, and 22 as a group. App. Br.
17. We select independent claim 15 as the representative claim in
accordance with 37 C.F.R. § 41.37 (c)(1)(vii) (2011). Claims 17, 19, 21, and
22 stand or fall with claim 15.
The Examiner finds that Vick discloses a safety valve including a
spring 40 having at least one leg comprising multiple overlapping beams 42,
44. Ans. 5. Appellants argue Vick does not describe such a spring, but
instead the spring 40 includes appendages 42 and sides 44. Reply Br. 18.
However, the specific language Vick uses to describe the elements 42, 44 is
not dispositive as to whether they can be considered to be “beams” within
the meaning of the term as used in claim 15. Anticipation is not an
ipsissimis verbis test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Appellants also argue that “Vick does not disclose or suggest that at least
one of the appendages 42 or the sides 44 comprises multiple overlapping
beams.” Reply Br. 18. However, the Examiner is not asserting that one of
the appendages 42 or one of the sides 44 comprises multiple overlapping
beams. The Examiner’s position is that an appendage 42 and the
corresponding side 44 together comprise overlapping beams. Ans. 5, 12.
Lastly, Appellants contend that Vick’s appendages 42 and sides 44 are
individual legs of the spring 40 and Vick does not disclose or suggest at least
one leg comprising multiple overlapping beams. We find this contention
Appeal 2010-007855
Application 11/409,518

9
unpersuasive. During patent examination, claims are given their broadest
reasonable construction in light of the specification. Phillips v. AWH Corp.,
415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). The spring 40 as shown in
Figure 4 of Vick includes an appendage 42 and a side 44 paired together on
one side of the structure and another appendage 42 and side 44 paired
together on the other side of the structure. Each appendage-side pair
reasonably can be viewed as comprising two beams that are aligned and
coextensive. Although not in abutting relationship, the two beams are in
close proximity. The Appellant points to nothing in the Specification or
elsewhere which persuades us that beams have to be abutting to overlap.
Therefore, applying the broadest reasonable interpretation of the term
“overlapping,”3 we determine that the corresponding appendages 42 and
sides 44 of Vick are overlapping beams.
For Vick to anticipate claim 15, a pair of overlapping beams 42, 44
must form a single leg. Although the appendages and sides arguably could
be viewed as four independent legs or beams, it is also reasonable that a
person of ordinary skill in the art, applying the broadest reasonable
interpretation, would view the spring 40 as comprising two legs, each leg
comprising a corresponding pair of overlapping beams 42, 44. Unlike the
member 64 and the arm 54 of Deaton, the beams 42, 44 operate together to
bias the flapper 16 toward its closed position. Specifically, both the

3 We note that Appellants’ Specification does not specifically discuss the
overlap of the beams 42, 44, 46, 48 and thus does not shed any light on how
the term “overlapping” should be interpreted. We thus interpret the term in
accordance with its ordinary and customary meaning. See Phillips, 415 F.3d
at 1312-13.
Appeal 2010-007855
Application 11/409,518

10
appendage 42 and the side 44 are flexed when the flapper 16 is opened and
both elements thereby create spring forces that act in concert to bias the
flapper 16 toward its closed position. Vick, p. 3, paras. [0044], [0045].
Also, because the beams 42, 44 of each pair are coextensive and aligned in
close physical proximity, and the respective pairs are spaced apart on
opposite sides of the central portion 46, the two pairs of beams give the
appearance as being two legs.
For the reasons discussed above, we sustain the rejection of claim 15
as being anticipated by Vick. Claims 17, 19, 21, and 22 fall with claim 15.
Claim 20 recites that the spring is formed from multiple pieces of
material joined to each other. As noted above, claims are given their
broadest reasonable construction in light of the specification during patent
examination. Phillips, 415 F.3d at 1316. Appellants’ Specification
describes the spring 30 embodiment as being
integrally formed of a single piece of material ....
Alternatively, the spring 30 could be formed from
multiple pieces of material, with the lower ends of the
beams 36, 38 joined using any technique (such as
welding, clamping, bonding, wire wrapping, composite
wrapping, fastening with rivets, screws, bolts, pins, etc.).
Spec. 11, ll. 6-14. Similarly, the spring 40 embodiment is described as being
“formed of a single piece of material,” but alternatively “could be formed of
multiple pieces of material … in keeping with the principles of the
invention.” Spec. 12, ll. 3-10. Appellants’ Specification thus contrasts
forming the spring of multiple pieces of material joined together with
forming the spring of a single piece of material. Accordingly, when
considered in light of how the phrase is used in the Specification, the
Appeal 2010-007855
Application 11/409,518

11
broadest reasonable interpretation of “multiple pieces of material joined to
each other” means two or more separate, unconnected pieces that are
subsequently joined together and precludes a unitary structure comprising
multiple sections that are integrally formed together.
Appellants argue that Vick does not disclose a spring that is formed
from multiple pieces of material joined to each other. App. Br. 17.
Appellants contend that Figure 4 of Vick shows the spring 40 to be made of
a single piece of material. App. Br. 18. In response, the Examiner notes that
Paragraph [0043] of Vick states “the beam 40 includes two lateral sides 44
joined to a central portion 46,” and asserts “[o]ne of skill in the art would
know that the use of the term ‘joined’ means that the pieces were not
attached, or in a single piece, before the joining occurred.” Ans. 12.
However, an ordinary meaning of “joined” taken from a general dictionary
is “[p]ut together, connected, combined, united, etc.” OXFORD ENGLISH
DICTIONARY, 2d ed. (1989), Definition 1, http://www.oed.com, last visited
August 27, 2012. Thus, the term “joined” as used in Paragraph [0043] of
Vick does not necessarily mean that the spring or beam 40 has a multi-piece
construction, especially when Figure 4 of Vick appears to show the spring
40 as having a single-piece construction, as noted by Appellants.
Furthermore, unlike Appellants’ Specification, the Vick reference does not
provide any discussion on whether the spring 40 may be single-piece, multi-
piece or both.
Vick is at best ambiguous as to whether the spring 40 has a single-
piece or multi-piece construction and therefore fails to support a finding of
anticipation. See In re Brink, 419 F.2d 914, 917 (CCPA 1970) (“if a
Appeal 2010-007855
Application 11/409,518

12
reference is ambiguous and can be interpreted so that it may or may no [sic]
constitute an anticipation of an appellant’s claims, an anticipation rejection
under 35 U.S.C. § 102 based upon the ambiguous reference is improper.”).
We thus cannot sustain the rejection of claim 20 as being anticipated by
Vick.
Rejection of claims 1-8, 10, and 16 over Deaton in view of Turkish
Independent claim 1 recites a safety valve comprising a spring
including at least one leg having a progressively reduced cross-sectional area
along a majority of its length. The Examiner finds that Deaton teaches all of
the limitations of claim 1 except for the progressively reduced cross-
sectional area. Ans. 6. The Examiner then concludes that it would have
been obvious to one of ordinary skill in the art to try making the spring leg
of Deaton with a progressively reduced cross-sectional area as taught by
Turkish “to achieve the predictable result of allowing the thin ends to be
deflected.” Ans. 6-7.
Appellants argue that the member 64 of Deaton is a torsion spring and
the spring beam 28 of Turkish is a cantilever spring, which is an entirely
different kind of spring. App. Br. 19. Because of this difference, Appellants
urge that one of skill in the art would not look to Turkish for instruction on
how to construct a torsion spring. Id. The Examiner counters by asserting
the springs of Deaton and Turkish are not different kinds of springs because
“one of skill in the art knows that both a torsion and cantilever spring require
one end of the spring to be held fast or supported, while the rest of the spring
is allowed to bend or turn.” Ans. 13.
Appeal 2010-007855
Application 11/409,518

13
We find the Appellants’ position to be more convincing. The
Examiner’s assertion that torsion and cantilever springs are not different
kinds of springs because both require one end to be fixed fails because the
other end of a torsion spring typically is also fixed while the other end of a
cantilever spring is allowed to deflect. The two types of springs operate in
fundamentally different manners: torsion springs twist, while cantilever
springs bend or flex.
Furthermore, we disagree with the Examiner that Turkish provides a
clear motivation to make the proposed modification. As noted above, the
Examiner asserts that the modification would “achieve the predictable result
of allowing the thin ends to be deflected.” However, allowing the ends to be
deflected is not a reason that would cause one of skill in the art to consider
modifying Deaton because, as discussed supra, the back ends of Deaton’s
member 64 are anchored to resist rotation and thus are not intended to
deflect. A person of ordinary skill in the art would not consider making a
modification that resulted in undesired deflection. The Examiner thus has
not articulated sufficient reasoning with a rational underpinning to support
the legal conclusion of obviousness.
Accordingly, we cannot sustain the rejection of claim 1—and of
claims 2-8 depending therefrom—under 35 U.S.C. § 103(a) as being
unpatentable over Deaton in view of Turkish. Given that claims 10 and 16
both recite the same limitation of a spring leg having a progressively
reduced cross-sectional area along a majority of its length, we also do not
sustain the rejection of these claims as being unpatentable over Deaton in
view of Turkish.
Appeal 2010-007855
Application 11/409,518

14
Rejection of claim 16 over Vick in view of Turkish
Claim 16, which depends from claim 15, recites that the leg of claim
15 has a progressively reduced cross-sectional area along a majority of its
length. Vick, like Deaton, does not disclose this limitation. The Examiner
concludes that it would have been obvious to modify Vick to include the
missing cross-sectional limitation for the same rationale provided in the
rejection of claim 1 as being unpatentable over Deaton in view of Turkish.
Ans. 7.
Appellants assert that the Examiner is silent as to why a person skilled
in the art would be motivated to combine Vick and Turkish. App. Br. 23.
We disagree. While not explained in great detail, the Examiner has stated
(as noted above) that the rationale for combining Vick and Turkish is the
same rationale given for combining Deaton and Turkish. We take this to
mean that the Examiner’s position is it would have been obvious to one of
ordinary skill in the art to try making a leg of Vick’s spring 40 with a
progressively reduced cross-sectional area as taught by Turkish “to achieve
the predictable result of allowing the thin ends to be deflected.”
As discussed supra, the spring 40 of Vick has two legs, with each leg
comprising overlapping beams in the form of an appendage 42 and a side 44.
The beams 42, 44 bend or flex and thus operate in the same manner as the
beam 28 of Turkish. Accordingly, it is reasonable to conclude one of
ordinary skill in the art would have a reason to provide one or both beams
42, 44 of Vick with a progressively reduced cross-sectional area to facilitate
deflection of the beams. As Appellants have not advanced any other
Appeal 2010-007855
Application 11/409,518

15
arguments to the contrary, we sustain the rejection of claim 16 as being
unpatentable over Vick in view of Turkish.
CONCLUSIONS
The Examiner has failed to establish that the entire spring 60 of
Deaton rotates with the closure member or flapper 38.
Deaton discloses a spring having at least one leg comprising multiple
overlapping beams.
Vick discloses a spring having at least one leg comprising multiple
overlapping beams.
Vick does not disclose a spring that is formed from multiple pieces of
material joined to each other.
The Examiner did not articulate adequate reasoning based on rational
underpinnings to explain why one of ordinary skill would have been led to
combine the Deaton and Turkish references.
The Examiner did articulate adequate reasoning based on rational
underpinnings to explain why one of ordinary skill would have been led to
combine the Vick and Turkish references.

DECISION
The Examiner’s rejection of claims 9, 11-15, and 17-23 under 35
U.S.C. § 102(b) as being anticipated by Deaton is reversed.
The Examiner’s rejection of claims 15, 17, 19, 21 and 22 under 35
U.S.C. § 102(b) as being anticipated by Vick is affirmed.
The Examiner’s rejection of claim 20 under 35 U.S.C. § 102(b) as
being anticipated by Vick is reversed.
Appeal 2010-007855
Application 11/409,518

16
The Examiner’s rejection of claims 1-8, 10, and 16 under 35 U.S.C.
§ 103(a) as being unpatentable over Deaton in view of Turkish is reversed.
The Examiner’s rejection of claim 16 under 35 U.S.C. § 103(a) as
being unpatentable over Vick in view of Turkish is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED-IN-PART

hh